Appeal No. 2004-0967 Page 3
Application No. 10/145,031
the appellant and the examiner. As a consequence of our review, we make the
determinations which follow.
The appellant’s invention is directed to solving the problem of breaking off the
distal ends of circuit boards if an attempt is made to pull them from their slot in the
apparatus without disengaging the connectors that perpendicularly engage the board.
This is accomplished by providing a board pulling device comprising movable and
stationary frames between which an elastic body is interposed. In the statement of the
rejection on page 4 of the Answer, the examiner has taken the position that with regard
to the recitation of the properties of the elastic body
the claims, as amended, recite the limitations, “compression stiffness”,
and, “tensile stiffness” (independent claims 1, 5, 9, 13, dependent claims
3, 7, 11, 15) which are not disclosed in the Specification as originally filed,
which causes the claims not to be in compliance with 35 U.S.C. § 112, first paragraph.
The examiner goes on to explain that the disputed terms are not supported “expressly,
implicitly, or inherently” in the specification, and therefore one of ordinary skill in the art
is not instructed as to how to make and use the invention. We find ourselves in
agreement with the appellant that this rejection is not well taken, and we will not sustain
it. Our reasoning follows.
The examiner is correct in asserting that the terms “compression stiffness” and
“tensile stiffness” are not present in the specification. However, there is no requirement
that the language in claims be recited verbatim in the specification (see MPEP
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